Ex Parte McEwan

Patent Trial and Appeal BoardNov 16, 2012

10419274 (P.T.A.B. Nov. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/419,274 04/21/2003 John A. McEwan 746801-20 8794 22204 7590 11/19/2012 NIXON PEABODY, LLP 401 9TH STREET, NW SUITE 900 WASHINGTON, DC 20004-2128 EXAMINER NGUYEN, NAM V ART UNIT PAPER NUMBER 2682 MAIL DATE DELIVERY MODE 11/19/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JOHN A. McEWAN ________________ Appeal 2010-003569 Application 10/419,274 Technology Center 2600 ________________ Before JEFFREY S. SMITH, BRUCE R. WINSOR, and ANDREW CALDWELL, Administrative Patent Judges. CALDWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003569 Application 10/419,274 2 SUMMARY Appellant appeals under 35 U.S.C. §§ 6(b) and 134(a) from the Examiner’s final rejection of claims 1, 2, 4-18, 20, 21, 23-38, 40-45, 47, and 49. Claims 3, 19, 22, 39, 46, 48, and 50 are cancelled. We affirm. STATEMENT OF CASE Appellant describes the present invention as directed to a security system including a first transceiver for transmitting a signal to a second transceiver when the first transceiver is proximate to a protected device such as a door or an electronic device. When the signal is received and authenticated, and when a verification device is activated, security features related to the device are deactivated. The verification device is configured to be activated when a person takes natural actions to access the device. Activating the device in response to a natural action obfuscates the verification process and eliminates the need to train authorized users on use of the system. Abstract. Independent claim 1 is representative of a security system according to the invention and is shown below with disputed limitations in italics: 1. A system for securely activating a mechanism, said system comprising: a first unit; a second unit configured to transmit a signal to said first unit; a verification device associated with the mechanism and operatively coupled to the mechanism to activate in response to a tactual natural action taken when operating the mechanism; and a deactivation device configured to deactivate security features of the mechanism when the signal is received and the verification device is activated, Appeal 2010-003569 Application 10/419,274 3 wherein said mechanism does not secure a component of an automobile. THE REJECTIONS 1. The Examiner rejected claims 1, 2, 4-18, 20, 21, 23-38, and 40-45 under 35 U.S.C. § 103(a) as being unpatentable over Duhame (U.S. Patent No. 5,541,585; July 30, 1996) and Fischer (U.S. Patent No. 5,552,641; Sep. 3, 1996).1 Ans. 3-12. 2. The Examiner rejected claims 47 and 49 under 35 U.S.C. § 103(a) as being unpatentable over Duhame, Fischer, and Hwang (U.S. Patent No. 6,374,652 B1; Apr. 23, 2002). Ans. 7-8 and 12. THE OBVIOUSNESS REJECTION OVER DUHAME AND FISCHER The Examiner concludes that claim 1 is obvious over Duhame and Fischer. Id. at 3-12. The Examiner relies upon Duhame for teaching all limitations of the claim except for the verification device and relies upon Fischer for teaching a verification device. Id. at 3-4. The Examiner explains that Fischer discloses a door opening mechanism where a car only wirelessly queries a portable transponder for an answer code used to open the doors after the door handle is actuated. Id. at 4-5 (citing Fischer col. 5, ll. 1-15; col. 8, ll. 32-35; Figs. 2-3). The Examiner explains that it would be obvious to one of ordinary skill in the art to modify Duhame to initiate 1 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the following documents for their respective details: the Appeal Brief (App. Br.) filed June 16, 2009; the Examiner’s Answer (Ans.) mailed August 31, 2009; and the Reply Brief (Reply Br.) filed November 2, 2009. Appeal 2010-003569 Application 10/419,274 4 communication with the portable transponder upon actuation of a door handle as taught by Fischer. See Id. at 4-5. Appellant argues: (1) various alleged defects in the Examiner’s prima facie case of obviousness associated with whether Duhame teaches a first unit as in claims 1 and 20. App. Br. 6-9; Reply Br. 1-4. (2) Duhame teaches away from the claimed invention because Duhame’s presence detector does not activate in response to a tactual natural action. App. Br. 9. (3) one of ordinary skill in the art would not turn to the disclosure of Fischer to satisfy the shortcomings of Duhame since the presence detector of Duhame is not in the same field of endeavor as the door handle of Fischer. App. Br. 9-10; Reply Br. 4-8. (4) one of ordinary skill in the art would not modify Duhame using Fischer as purported by the Examiner, since doing so would change the principle operation of Duhame. App. Br. 10-11; Reply Br 6-7. PRINCIPLES OF LAW Our reviewing court has recently set forth the standard for determining the sufficiency of an Examiner’s rejection in making a prima facie case: [T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant… [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” Appeal 2010-003569 Application 10/419,274 5 That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citations omitted) (alterations in original). ANALYSIS Appellant Argument (1) Appellant argues that the Examiner fails to make a prima facie case of obviousness in the Final Rejection. App. Br. 6-9; Reply Br. 1-4. More specifically, Appellant contends that the Examiner points to Duhame’s door opening 10 as both the first unit and mechanism of claim 1. App. Br. 7; Reply Br. 2-3. Appellant explains that the door opening cannot function to receive a transmitted signal from the second unit as claimed. App. Br. 8. Appellant argues that Duhame teaches away from the claimed invention because the door opening is never disclosed as receiving any transmitted signals. Id. Appellant’s arguments regarding these alleged defects in the Examiner’s prima facie case must be evaluated against the claims, the Specification, and the references. In the Summary of the Claimed Subject Matter in the Appeal Brief, Appellant points to transceiver 20 of Figure 1, associated with the door, as an embodiment of the first unit of claim 1. App. Br. 5 footnote 3. The largest block in Duhame’s Figure 3 discloses a fixed transceiver 16 associated with a door. Given that Duhame does in fact disclose a fixed transceiver associated with the door (i.e., a first unit) and the fixed transceiver’s correspondence with the claimed subject matter, we are Appeal 2010-003569 Application 10/419,274 6 not persuaded that the Examiner’s rationale, together with the references, is so uninformative that Appellant was prevented from recognizing and seeking to counter the grounds for rejection. See In re Jung, 637 F.3d at 1362. Appellant Argument (2) Appellant argues that Duhame teaches away from the claimed invention because Duhame’s presence detector does not activate in response to a tactual natural action. App. Br. 9. Appellant explains that Duhame’s presence detector is a passive infrared detector aimed into an approach zone. Id. Appellant contends that Duhame’s presence detector does not activate in response to a tactual natural action since the presence detector is activated prior to a tactual natural action. Id. Various portions of Appellant’s Specification are relevant to our analysis of Appellant’s argument and our construction of the claim. “[N]atural actions” are disclosed as “actions normally taken to operate the mechanism notwithstanding [the] security system.” Spec. ¶ [00023]. The term “tactual” is not defined or used in the Specification. Examples in the Specification of natural actions that are encompassed within the ordinary meaning of “tactual” include: the turning of a door handle, the touching of a door handle, and the operating of a door handle or door. Spec. ¶¶ [00022]- [00023]. The Specification also describes how the verification device may be a heat sensor or a light sensor. Spec. ¶ [00023]. The Specification informs our construction of claim terminology. Given the absence of a definition of “tactual natural action” in the Specification, we will construe the term as having its broadest reasonable interpretation in view of the Specification. A “tactual natural action” is Appeal 2010-003569 Application 10/419,274 7 therefore any “natural action,” as disclosed in the Specification, that also involves touch. In view of the Specification’s examples of verification devices and the description of how a verification device activates, we will construe the term “activate” as requiring something more than the device merely being active or powered on. A verification device is “activated” when it has determined that a tactual natural action has occurred in the operation of a mechanism. Duhame describes how a presence detector (i.e., passive infrared detector) is “activated” as a person enters the approach zone. Col. 7, ll. 3-7. The presence detector is always active in the sense of being powered on and attempting to detect a person. However, the presence detector is “activated” when it detects a person in the approach zone and sends a signal to the fixed transceiver causing the fixed transceiver to send an interrogation signal. Id. Although the Examiner relies upon Fischer for teaching a verification device to activate in response to a tactual natural action taken when operating the mechanism, Duhame teaches all of the limitations of claim 1. In Duhame, when a person enters the approach zone, the person touches the floor. The person’s entry into the approach zone is a “natural action” as defined by Appellant. The action involves touch. The person’s approach to the door is an action taken when operating the door. Duhame therefore teaches a “tactual natural action” when operating the door. Duhame also teaches an infrared, or heat, sensor that determines when a person is present in the approach zone (i.e., activates) and then sends a signal to the fixed transceiver. Col. 7, ll. 3-7. Since Duhame teaches a verification device that activates in response to a tactual natural action taken when operating the Appeal 2010-003569 Application 10/419,274 8 mechanism, we are not persuaded that Duhame teaches away from the claimed invention as argued by Appellant. Nonetheless, the Examiner relies upon Fischer for teaching a verification device as claimed. Ans. 4. If a prior art reference discloses a different solution to a similar problem, it does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, Appellant does not point to any probative evidence showing that Duhame criticizes, discredits, or otherwise discourages the Examiner’s proposed modification of Duhame. See App. Br. 9. Absent such evidence, Appellant’s argument reduces to a statement that Duhame discloses something different. We are therefore not persuaded that Duhame teaches away from the claimed invention. Appellant Argument (3) Appellant argues that one of ordinary skill in the art would not turn to the disclosure of Fischer to satisfy the shortcomings of Duhame since the presence detector of Duhame is not in the same field of endeavor as the door handle of Fischer. App. Br. 9-10; Reply Br. 4-8. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). We first note that Appellant does not apply the correct legal standard. Appellant argues that the issue is whether particular elements are within the same field of Appeal 2010-003569 Application 10/419,274 9 endeavor and not whether the references are in the same field of endeavor. Id. Furthermore, Appellant does not explain why Fischer is not reasonably pertinent even if Fischer is not, as argued, within the same field of endeavor. See Id. We also note that Fischer explicitly suggests using its invention for access control in buildings. Col. 8, ll. 32-35. Given Fischer’s suggestion to use its invention for access control in buildings, we conclude that Fischer is either in the same field of endeavor as Duhame and Appellant’s claimed invention or at least reasonably pertinent to the problem addressed by Appellant’s claimed invention. Appellant Argument (4) Appellant also argues that that one of ordinary skill in the art would not modify Duhame using Fischer as purported by the Examiner, since doing so would change the principle operation of Duhame and render Duhame unsatisfactory for its intended purpose. App. Br. 10-11; Reply Br 6-7. Appellant has failed to provide an explanation or analysis as to why Duhame, as modified by Fischer, would be unsatisfactory for its intended purpose. Id. Appellant merely recites case law supporting the proposition. Id. Absent an explanation or analysis, we are not persuaded that the Examiner’s proposed modification of Duhame would render Duhame unsatisfactory for its intended purpose. We are therefore not persuaded that the Examiner erred in rejecting representative claim 1, and claims 2, 4-18, 20, 21, 23-38, and 40-45 not separately argued with particularity. Appeal 2010-003569 Application 10/419,274 10 THE OTHER OBVIOUSNESS REJECTIONS We likewise sustain the Examiner's obviousness rejection of claims 47 and 49 over Duhame, Fischer, and Hwang. Appellant has not particularly pointed out errors in the Examiner’s reasoning regarding the additional teachings of Hwang. App. Br. 11-12; Reply Br. 8. Appellant merely states that the claims are allowable for the reasons discussed above with reference to claims 1 and 20. Id. We, therefore, sustain the rejection for the reasons given above. CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 1, 2, 4-18, 20, 21, 23-38, 40-45, 47, and 49 under 35 U.S.C. § 103. DECISION The Examiner’s decision rejecting claims 1, 2, 4-18, 20, 21, 23-38, 40-45, 47, and 49 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED rwk